Innospan Corp v. Intuit et al, No. 3:2010cv04422 - Document 74 (N.D. Cal. 2010)
Court Description: ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION AND MOTION FOR LEAVE TO FILE SUPPLEMENTAL REQUEST FOR JUDICIAL NOTICE by Judge Alsup finding as moot 62 Motion for Leave to File; denying 26 Ex Parte Application (whalc1, COURT STAFF) (Filed on 12/3/2010)
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Innospan Corp v. Intuit et al Doc. 74 1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 INNOSPAN CORP., 11 For the Northern District of California United States District Court 10 12 13 No. C 10-04422 WHA Plaintiff, v. 14 INTUIT, INC., MINT SOFTWARE, INC., SHASTA VENTURES GP, LLC, and DOES 1–20, 15 ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION AND MOTION FOR LEAVE TO FILE SUPPLEMENTAL REQUEST FOR JUDICIAL NOTICE Defendants. 16 17 18 19 20 / INTRODUCTION In this trademark infringement action, plaintiff Innospan Corp. moves for a preliminary injunction. For the reasons stated below, the motion is DENIED. STATEMENT 21 On September 20, 2010, Innospan filed its complaint in the Santa Clara County Superior 22 Court, reciting seven causes of action: (1) conversion and misappropriation (against Intuit, Inc.; 23 Mint Software, Inc.; and Shasta Ventures GP, LLC); (2) infringement of unregistered mark 24 (against Intuit and Mint); (3) common law misappropriation and unfair competition (against Intuit 25 and Mint); (4) state and common law misappropriation and unfair competition (against Shasta); 26 (5) state statutory unfair competition (against Intuit, Mint, and Shasta); (6) declaratory relief 27 (against Intuit and Mint); and (7) unjust enrichment (against Mint and Shasta). Intuit and Mint 28 removed the action to federal court on September 30, 2010. Dockets.Justia.com 1 On October 27, 2010, Innospan filed an ex parte application for a temporary restraining 2 order. The next day, an order issued determining that defendants should have a full and fair 3 opportunity to respond to this request, which would be treated as a motion for preliminary 4 injunction. Defendants opposed this motion and also have filed motions to dismiss that are 5 addressed in a companion order. This order follows full briefing and a hearing on the motion. 6 Innospan’s alleged facts include the following. Innospan and its related companies have 7 been using a “mint” mark continuously since July 2005. These companies have done business 8 in the fields of “high speed Internet solution, IT consulting service, movable printer sales & 9 service, and social networking site” (Br. 2). Defendants Intuit and Mint are in the business of providing free online personal financial services, and they have used several mint marks in 11 For the Northern District of California United States District Court 10 connection with this business. Innospan’s allegations regarding the use of these marks are 12 summarized in the table below: 13 14 Mark Period of Use 15 16 Entity or Entities Using Mark “continuously since July, 2005” Innospan and related companies “after March, 2006 until March, 2007” Mint “from April to August, 2007” Mint “from September, 2007 to November, 2008” Mint December 2008 to date (Mint) November 2009 to date (Intuit) Mint and Intuit 17 18 19 20 21 22 23 24 25 26 27 28 2 1 (Br. 2). Due to Mint and Intuit’s use of these marks, Innospan “suffered losses stemming from 2 actual confusion by its potential business partner” (Br. 2). 3 In the early months of 2006, Shasta considered investing in Innospan, and Innospan sent 4 Shasta several business plans displaying the Innospan mint mark. Shasta declined to invest in 5 Innospan in or about May 2006, and about a year later (in or about March 2007), Shasta 6 invested in Mint (Br. 2–3). Based on its factual allegations, Innospan infers that “it is very likely” 7 that Mint produced its second mint mark “by converting” Innospan’s mint mark with Shasta’s 8 help (Br. 2). 9 ANALYSIS “A preliminary injunction is a drastic and extraordinary remedy that is not to be routinely 11 For the Northern District of California United States District Court 10 granted.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1324 (Fed. Cir. 2004) 12 (internal quotation omitted). “A plaintiff seeking a preliminary injunction must establish that he 13 is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of 14 preliminary relief, that the balance of the equities tips in his favor, and that an injunction is in the 15 public interest.” Winter v. Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374 (2008). Regarding 16 the second element, the Supreme Court requires plaintiffs to demonstrate that irreparable injury is 17 likely in the absence of an injunction, not merely “possible.” Iibid. at 375. “Issuing a preliminary 18 injunction based only on a possibility of irreparable harm is inconsistent with our characterization 19 of injunctive relief as an extraordinary remedy that may only be awarded upon a clear showing 20 that the plaintiff is entitled to such relief.” Id. at 375–76. 21 This order finds that Innospan has not established that it is likely to suffer irreparable 22 harm in the absence of preliminary relief, and that a preliminary injunction therefore is not 23 appropriate. Because Innospan’s failure to establish this element is sufficient grounds to deny its 24 motion, this order does not reach the question of whether Innospan established any of the other 25 Winter elements. 26 With respect to Shasta, there simply is no ongoing conduct to enjoin. All of the harm 27 Innospan claims to suffer results from Mint and Intuit’s use of mint marks. Any role Shasta may 28 have played in enabling Mint and Innospan to use these marks ended years ago — when Shasta 3 1 allegedly helped Mint “convert” Innospan’s mark “in or about March, 2007” (Br. 2). Innospan 2 does not accuse Shasta of using mint marks itself or of engaging in any other ongoing conduct 3 that causes harm to Innospan. As such, Innospan has failed to establish that it is likely to suffer 4 any harm in the absence of a preliminary injunction against Shasta. This failure alone is 5 sufficient to deny Innospan’s motion as to Shasta. 6 With respect to Intuit and Mint, the bulk of the alleged harm caused by their conduct 7 already has occurred. Innospan alleges that Mint has been using infringing marks since April 8 2007, but Innospan did not file this action until September 2010 (over three years later) and did 9 not request preliminary relief until over a month after filing suit. As was the case with another recent trademark infringement plaintiff requesting a preliminary injunction, “[t]he undisputed fact 11 For the Northern District of California United States District Court 10 that plaintiff did not timely act to prevent [defendant’s mark] from inundating the market is alone 12 sufficient to deny the instant motion.” Edge Games, Inc. v. Elec. Arts, Inc., 13 No. C 10-02614 WHA, 2010 WL 3895533, at *13 (N.D. Cal. Oct. 1, 2010) (Alsup, J.). In Edge 14 Games, the plaintiff waited more than three years after the accused product name was announced 15 and 21 months after the product was publicly offered for sale before seeking a preliminary 16 injunction. Because of that delay, the bulk of the alleged harm to the asserted marks had already 17 been done, and Edge Games “ha[d] not shown why issuing a preliminary injunction now would 18 prevent any irreparable harm to its marks beyond the ‘harm’ that ha[d] already occurred.” Ibid. 19 So too here. Innospan makes excuses for its delay (over three years since the alleged 20 infringement began and over a month since filing suit), but those excuses are beside the point 21 (see Reply Br. to Intuit’s Opp. 12–13). In its allegations regarding the likelihood of irreparable 22 harm absent a preliminary injunction, Innospan claims to have suffered loss of control over the 23 mint mark, loss of goodwill, and loss of trade (Br. 22–24). But Innospan does not establish that 24 further losses are imminent — or, indeed, that it has anything left to lose. Innospan waited to 25 request preliminary relief until after it already had suffered the bulk of its alleged harm, and 26 Innospan has not shown why issuing a preliminary injunction now would prevent any irreparable 27 harm beyond the damage already done. As in Edge Games, these failures are sufficient to deny 28 Innospan’s motion. 4 1 Innospan makes two arguments as to why it has established that it is likely to suffer 2 irreparable harm in the absence of preliminary relief. Neither argument is persuasive. First, 3 Innospan asserts that “[i]t is ordinarily presumed that a plaintiff who has shown likelihood of 4 confusion will suffer irreparable injury absent injunctive relief” (Br. 22). Innospan cites a 1987 5 decision from the Ninth Circuit to support this proposition. Following the Supreme Court’s 2008 6 decision in Winter, however, irreparable harm cannot be presumed — even for trademark actions. 7 Edge Games, 2010 WL 3895533, at *12. Thus, even if Innospan had shown likelihood of 8 confusion (a question this order need not reach), that alone would not carry the burden of 9 establishing a likelihood of irreparable harm absent preliminary relief. Second, Innospan argues that “a plaintiff’s loss of control over their business reputation, 11 For the Northern District of California United States District Court 10 loss of trade and loss of goodwill” typically constitute irreparable harm in trademark cases 12 (Br. 22). Regarding loss of control, Innospan cites two examples of “evidence that Plaintiff lost 13 control over the use of” its mark: (1) “the fact that Defendants were able to create three 14 derivative logos based on” Innospan’s mark; and (2) that “their irresponsible use coupled with 15 intense campaign to promote their mark created many opportunities for others to create and 16 misuse similar marks” (ibid. at 23). Beyond this narrative of how Innospan “lost control” of the 17 mint mark, Innospan does not allege that it maintains any modicum of control over the mark that 18 would be jeopardized without a preliminary injunction. 19 Regarding loss of trade and goodwill, Innospan alleges that it lost a valuable business 20 opportunity when a repeat customer found Mint’s website, thought it was Innospan’s website, 21 erroneously inferred that Innospan had ceased the high-speed internet business, and took his 22 business offer elsewhere (id. at 22). Innospan speculates that “even now, there may be another 23 similarly confused business customer deciding to turn another business opportunity to some other 24 company” (id. at 22–23 n.15). These statements do not establish a likelihood of irreparable harm 25 absent preliminary relief. Financial losses typically do not constitute irreparable harm, because 26 they can be adequately compensated in the course of litigation. Cal. Pharmacists Ass’n v. 27 Maxwell-Jolly, 563 F.3d 847, 851–52 (9th Cir. 2009). Moreover, Innospan’s isolated example of 28 an alleged past loss combined with speculation about the future may establish that further losses 5 1 are possible, but Innospan has not satisfied the Supreme Court’s requirement of showing that such 2 losses are likely. See Winter, 129 S. Ct. at 375–76. 3 CONCLUSION 4 For the foregoing reasons, plaintiff’s motion for a preliminary injunction is DENIED. 5 Defendants Intuit and Mint’s administrative motion for leave to file a supplemental request for 6 judicial notice is DENIED AS MOOT. 7 8 IT IS SO ORDERED. 9 Dated: December 3, 2010. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6
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